INTELLECTUAL PROPERTY RIGHTS

Intellectual property (IP) is a term referring to creation of the intellect (the term used in studies of the
human mind) for which a monopoly (from greek word monos means single polein to sell) is assigned to
designated owners by law. Some common types of intellectual property rights (IPR), in some foreign
countries intellectual property rights is referred to as industrial property, copyright, patent and trademarks,
trade secrets all these cover music, literature and other artistic works, discoveries and inventions and words,
phrases, symbols and designs. Intellectual Property Rights are themselves a form of property called
intangible property.

Although many of the legal principles governing IP and IPR have evolved over centuries, it was not
until the 19th century that the term intellectual property began to be used and not until the late 20th century
that it became commonplace in the majority of the world.

Types of Intellectual Property

The term intellectual property is usually thought of as comprising four separate legal fields:

1. Trademarks

2. Copyrights

3. Patents

4. Trade secrets

1. Trademarks and Service Marks: A trademark or service mark is a word, name, symbol, or
device used to indicate the source, quality and ownership of a product or service. A trademark is used in
the marketing is recognizable sign, design or expression which identifies products or service of a particular
source from those of others. The trademark owner can be an individual, business organization, or any legal
entity. A trademark may be located on a package, a label, a voucher or on the product itself. For the sake
of corporate identity trademarks are also being.

General Logos:

The Trademark Registration Logo

In addition to words, trademarks can also consist of slogans, design, or sounds. Trademark provides
guarantee of quality and consistency of the product or service they identify.
Companies expend a great deal of time, effort and money/ in establishing
consumer recognition of and confidence in their marks.

Federal Registration of trademarks:

Interstate use of trademarks is governed by federal law, namely, the United States Trademark Act
(also called the Lanham Act), found at 15 U.S.C 1051et seq. In the United States, trademarks are generally
protected from their date of first public use. Registration of a mark is not required to secure protection for a
mark, although it offers numerous advantages, such as allowing the registrant to bring an action in federal
court for infringement of the mark.

Applications for federal registration of trademarks are made with the PTO. Registration is a fairly
lengthy process, generally taking anywhere from twelve to twenty-four months or even longer. The filing
fee is $335 per mark (Present $225 per class) per class of goods or services covered by the mark.

A trademark registration is valid for 10 years and may be renewed for additional ten year periods
thereafter as long as the mark is in used in interstate commerce. To maintain a mark the registrant is
required to file an affidavit with the PTO between the fifth and sixth year after registration and every ten
years to verify the mark is in continued use. Marks not in use are then available to others.

A properly selected, registered and protected mark can be of great value to a company or individual
desiring to establish and expand market share and better way to maintain a strong position in the
marketplace.
2. Copyrights: Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to the
authors of "original works of authorship" fixed in any tangible medium of expression. The manner and
medium of fixation are virtually unlimited. Creative expression may be captured in words, numbers, notes,
sounds, pictures, or any other graphic or symbolic media. The subject matter of copyright is extremely
broad, including literary, dramatic, musical, artistic, audiovisual, and architectural works. Copyright
protection is available to both published and unpublished works.

Copyright protection is available for more than merely serious works of fiction or art. Marketing
materials, advertising copy and cartoons are also protectable. Copyright is available for original working
protectable by copyright, such as titles, names, short phrases, or lists of ingredients. Similarly, ideas
methods and processes are not protectable by copyright, although the expression of those ideas is.

Copyright protection exists automatically from the time a work is created in fixed form. The owner
of a copyright has the right to reproduce the work, prepare derivative works based on the original work
(such as a sequel to the original), distribute copies of the work, and to perform and display the work.
Violations of such rights are protectable by infringement actions. Nevertheless, some uses of copyrighted
works are considered “fair use” and do not constitute infringement, such as use of an insignificant portion
of a work for noncommercial purposes or parody of a copyrighted work.

Definition:

General Definition of copyright “Copyright owner”, with respect to any one of the exclusive rights
comprised in a copyright, refers to the owner of that particular right.

Federal Registration of Copyrights: The works are protected under federal copyright law from the
time of their creation in a fixed form. Registration, however, is inexpensive, requiring only a $30 (present
$85) filing fee, and the process is expeditious. In most cases, the Copyright Office processes applications
within four to five months.

Copyrighted works are automatically protected from the moment of their creation for a term
generally enduring for the author’s life plus an additional seventy years after the author’s death. The policy
underlying the long period of copyright protection is that it may take several year for a painting, book, or
opera to achieve its true value, and thus, authors should receive a length of protection that will enable the
work to appreciate to its greatest extent.

3. Patents: A patent for an invention is the grant of a property right to the inventor, issued by the United
States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which
the application for the patent was filed in the United States or, in special cases, from the date an earlier
related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective
only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent
term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to
exclude others from making, using, offering for sale, or selling” the invention in the United States or
“importing” the invention into the United States. What is granted is not the right to make, use, offer for
sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or
importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the
USPTO.

There are three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine,
article of manufacture, or composition of matter, or any new and useful improvement thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article
of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct
and new variety of plant.

Federal Registration of Copyrights: Patents are governed exclusively by federal law (35 U.S.C
100 et seq). To obtain a patent, an inventor must file an application with the PTO (the same agency that
issues trademark registration) that fully describes the invention. Patent prosecution is expensive, time
consuming and complex. Costs can run into the thousands of dollars, and it generally takes over two year
for the PTO to issue a patent.

Patent protection exists for twenty years from the date of filing of an application for utility and
patents and fourteen years from the date of grant for design patents. After this period of time, the invention
fall into the public domain and may be used by any person without permission.

The inventor is granted an exclusive but limited period of time within which to exploit the
invention. After the patent expires, any member of the public is free to use, manufacture, or sell the
invention. Thus, patent law strikes a balance between the need to protect inventors and the need to allow
public access to important discoveries.

4. Trade Secrets: A trade secret consists of any valuable business information. The business secrets
are not to be known by the competitor. There is no limit to the type of information that can be protected as
trade secrets; For Example: Recipes, Marketing plans, financial projections, and methods of conducting
business can all constitute trade secrets. There is no requirement that a trade secret be unique or complex;
thus, even something as simple and nontechnical as a list of customers can qualify as a trade secret as long
as it affords its owner a competitive advantage and is not common knowledge.

If trade secrets were not protectable, companies would no incentive to invest time, money and effort
in research and development that ultimately benefits the public. Trade secret law thus promotes the
development of new methods and processes for doing business in the marketplace.

Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to
extensive statutory scheme for their protection, application and registration, there is no federal law relating
to trade secrets and no formalities are required to obtain rights to trade secrets. Trade secrets are
protectable under various state statutes and cases and by contractual agreements between parties. For
Example: Employers often require employees to sign confidentiality agreements in which employees agree
not to disclose proprietary information owned by the employer.

If properly protected, trade secrets may last forever. On the other hand, if companies fail to take
reasonable measures to maintain the secrecy of the information, trade secret protection may be lost. Thus,
disclosure of the information should be limited to those with a “need to know” it so as to perform their
duties, confidential information should be kept in secure or restricted areas, and employees with access to
proprietary information should sign nondisclosure agreements. If such measures are taken, a trade secret
can be protected in perpetuity.

Another method by which companies protect valuable information is by requiring employee to sign
agreements promising not to compete with the employer after leaving the job. Such covenants are strictly
scrutinized by courts, but generally, if they are reasonable in regard to time, scope and subject matter, they
are enforceable.

AGENCIES RESPONSIBLE FOR INTELLECTUAL PROPERTY

REGISTRATION
United States Patents and Trademark Office:
The agency charged with granting patents and registering trademarks is the United States Patent and
Trademark Office (PTO), one of fourteen bureaus within the U.S. Department of Commerce. The PTO,
founded more than two hundred years ago, employs nearly 700 (present 1000 employs) are working. At
present it is located in 18 building in Arlington, Virginia. Its official mailing address is Commissioner of
Patents and Trademarks, Washington, DC 20231.

The PTO is physically located at 2900 Crystal Drive in Arlington, Virginia. Its web site is and
offers a wealth of information, including basic information about trademarks and patents, fee schedules,
forms, and the ability to search for trademarks and patents. Since 1991, under the Omnibus Budget
Reconciliation Act, the PTO has operated in much the same way as a private business, providing valued
products and services to customers in exchange for fees that are used to fully fund PTO operations.

It uses no taxpayer funds. The PTO plans to move all of its operations to Alexandria, Virginia, by
mid-2005. The PTO is one of the busiest of all government agencies, and as individuals and companies
begin to understand the value of intellectual property, greater demands are being made on the PTO.

Legislation passed in 1997 established the PTO as a performance-based organization that is

managed by professionals, resulting in the creation of a new political position, deputy secretary of
commerce for intellectual property. In brief, the PTO operates more like a business with greater autonomy
over its budget, hiring, and procurement. U.S patents issued its first patent in 1790. Since 1976 the text
and images of more than three million are pending for registration. The PTO is continuing its transition
filing for both trademarks and from paper to electronic filing for both trademarks and patents.
 The PTO is led by the Under Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office (the “Director”), who is appointed by the President. The
Secretary of Commerce appoints a Commissioner for Patents and a Commissioner for Trademarks.
Citations to many cases in this text will be to “U.S.P.Q”., a reference to United States Patent Quarterly, a
reporter of cases decided by the Trademark Trial and Appeal Board (TTAB) as well as patent and
copyright cases.

INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES

There are a number of International organizations and agencies that promote the use and protection
of intellectual property. Although these organizations are discussed in more detail in the chapters to
follow, a brief introduction may be helpful:

International Trademark Association (INTA) is a not-for-profit international association

composed chiefly of trademark owners and practitioners. It is a global association. Trademark owners and
professionals dedicated in supporting trademarks and related IP in order to protect consumers and to
promote fair and effective commerce. More than 4000 (Present 6500 member) companies and law firms
more than 150 (Present 190 countries) countries belong to INTA, together with others interested in
promoting trademarks. INTA offers a wide variety of educational seminars and publications, including
many worthwhile materials available at no cost on the Internet. INTA members have collectively
contributes almost US $ 12 trillion to global GDP annually. INTA undertakes advocacy [active support]
work throughout the world to advance trademarks and offers educational programs and informational and
legal resources of global interest. Its head quarter in New York City, INTA also has offices in Brussels,
Shanghai and Washington DC and representative in Geneva and Mumbai. This association was founded in
1878 by 17 merchants and manufacturers who saw a need for an organization. The INTA is formed to
protect and promote the rights of trademark owners, to secure useful legislation (the process of making
laws), and to give aid and encouragement to all efforts for the advancement and observance of trademark
rights.

World Intellectual Property Organization (WIPO) was founded in 1883 and is specialized
agency of the United Nations whose purposes are to promote intellectual property throughout the world and
to administer 23 treaties (Present 26 treaties) dealing with intellectual property. WIPO is one of the 17
specialized agencies of the United Nations. It was created in 1967, to encourage creative activity, to
promote the protection of Intellectual Property throughout the world. More than 175 (Present 188) nations
are members of WIPO. Its headquarters in Geneva, Switzerland, current Director General of WIPO is
Francis Gurry took charge on October 1, 2008. The predecessor to WIPO was the BIRPI [Bureaux for the
Protection of Intellectual Property] it was established in 1893. WIPO was formally created by the
convention (meeting) establishing the world intellectual Property organization which entered into force on
April 26 1970.

Berne Convention for the Protection of Literary and Artistic Works (the Berne
Convention) An International copyright treaty called the convention for the protection of Literary and
Artistic works signed at Berne, Switzerland in 1886 under the leadership of Victor Hugo to protect literary
and artistic works. It has more than 145 member nations. The United States became a party to the Berne
Convention in 1989. The Berne Convention is administered by WIPO and is based on the precept that each
member nation must treat nation must treat nationals of other member countries like its own nationals for
purposes of copyright (the principle of “nation treatment”). In addition to establishing a system of equal
treatment that internationalized copyright amongst signatories, the agreement also required member states
to provide strong minimum standards for copyrights law. It was influenced by the French “right of the
author”.

Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city situated in Spain)
Agreement concerning the International Registration of Marks of 1891, as well as the protocol relating to
the Madrid Agreement 1989. The Madrid system provides a centrally administered system of obtaining a
bundle of trademark registration in separate jurisdiction. The protocol is a filing treaties and not
substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holder. It
came into existence in 1996. It allows trademark protection for more than sixty countries, including all 25
countries of the European Union.

Paris Convention The Paris convention for the protection of Industrial Property, signed in Paris,
France, on 20th March 1883, was one of the first Intellectual Property treaties, after a diplomatic conference
in Paris, France, on 20 March 1883 by Eleven (11) countries. According to Articles 2 and 3 of this treaty,
juristic (one who has through knowledge and experience of law) and natural persons who are either
national of or domiciled in a state party to the convention. The convention is currently still force. The
substantive provisions of the convention fall into three main categories: National Treatment, Priority right
and Common Rules.

An applicant for a trademark has six months after filing an application in any of the more than 160
member nations to file a corresponding application in any of the other member countries of the Paris
Convention and obtain the benefits of the first filing date. Similar priority is afforded for utility patent
applications, although the priority period is one year rather than six months. The Paris Convention is
administered by WIPO.

North American Free Trade Agreement (NAFTA) came into effect on January 1, 1994, and is
adhered to by the United States, Canada, and Mexico. The NAFTA resulted in some changes to U.S.
trademark law, primarily with regard to marks that include geographical terms. The NAFTA was built on
the success of the Canada-U.S Free Trade Agreement and provided a compliment to Canada’s efforts
through the WTO agreements by making deeper commitments in some key areas. This agreement has
brought economic growth and rising standards of living for people in all three countries.

General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is adhered to by
most of the major industrialized nations in the world. The most significant changes to U.S intellectual
property law from GATT are that nonuse of a trademark for three years creates a presumption the mark has
been abandoned and that the duration of utility patent is now twenty years from the filing date of the
application (rather than seventeen years from the date the patent issued, as was previously the case).
THE INCREASING IMPORTANCE OF INTELLECTAL PROPERTY RIGHTS
 Protecting Intellectual Property Rights
 Technology has led to increase awareness about the IP
 Some individuals and companies offer only knowledge. Thus, computer consultant, advertising
agencies, Internet companies, and software implementers sell only brainpower.
 Domain names and moving images are also be protected
 More than fifty percent of U.S. exports now depend on some form of intellectual property
protection.
 The rapidity with which information can be communicated through the Internet has led to
increasing challenges in the field of intellectual property.
 The most valuable assets a company owns are its Intellectual property assets
 Companies must act aggressively to protect these valuable assets from infringement (breaching,
violation of law) or misuse by others
 The field of intellectual property law aims to protect the value of such investments

-----x-----

.
 UNIT-2
TRADE MARKS
Introduction
Although there was some use of trademarks or symbols in the Middle East and Far East several
centuries ago, contemporary (modern) trademark law can be traced back to use of trademarks during the
medieval period in Europe by merchants who sought to distinguish the goods they sold from those sold by
others by applying a mark or symbol to their goods. By viewing the mark, purchasers would immediately
be able to identify the craftsperson that made the goods and make an informed decision about the quality of
the material. The use of symbols by medieval craftspeople to distinguish and identify their goods is the
direct antecedent for the modern use of trademarks.

Definition of Trademark:
The modern definition of trademark is that “it is a word, name, symbol, or device or a combination
thereof, used by a person [including a business entity], or which a person has a bonafide intention to
use, to identify and distinguish his or her goods from those manufactured by others and to indicate the
source of those goods.”

PURPOSE AND FUNCTION OF TRADEMARK

Trademarks perform two critical functions in the marketplace: [1] they provide assurance that
goods are of a certain quality and consistency, and [2] they assist consumers in making decisions about
the purchase of goods. The main purpose of trademark is to show the difference about the quality of goods
and service For example: If a trademark such as NIKE could be counterfeited (imitating) and used by
another on inferior merchandise (goods), there would be no incentive for the owners of the NIKE mark to
produce high-quality shoes and to expend money establishing consumer recognition of the products offered
under the NIKE marks.

Thus, protection of trademarks results in increased completion in the marketplace, with both the
producer of goods and services and the consumer as the ultimate beneficiaries. Business benefit because
they can reap the rewards of their investment in developing and marketing a product with one fearing
another business will deceive consumer by using the same or a confusingly similar mark for like goods, and
consumers benefit because they are able to identify and purchase desired and quality goods.

The value inherent in achieving consumer loyalty to a particular product or service through the
maintenance of consistent quality of the products or service offered under a mark is called goodwill.

 they identify one maker’s goods or services and distinguish them from those offered by others
 They indicate that all goods or services offered under the mark come from a single producer,
manufacturer, or “source”
 They indicate that all goods or services offered under the mark are of consistent quality and
  They serve as an advertising device so that consumers link a product or service being offered with a
mark

TYPES OF MARKS
There are four different types of marks. They are:

1. Trademark

2. Service mark

3. Certification mark

4. Collective mark

Trademark & Service mark

The term trademark thus refers to some physical and tangible good, and service mark refers to an
intangible service, in common usage the term trademark is often used to refer to marks for both goods and
service. The key point in this legal description is that a trademark is a visual mark that may use any
combination of letters and imagery to aid a company in differentiating itself from other entities.

The purpose of a trademark is to visually represent a person, company, or product, and trademark
should be designed to provide easy and definite recognition. The term mark will be used as a synonym for
both trademark and service marks. The federal statute ((law) an act passed by a legislative body) governing
trademark law, the U.S. Trademark Act (Lanham Act, found at 15 U.S.C 1051 et seq.) itself states that the
term mark includes any trademark, service mark, collective mark, or certificate mark.

A Certification mark
A citification mark is a word, name, symbol, device, or combination thereof, used by one person to
certify that the goods or services of others have certain features in regard to quality, material, mode of
manufacture, or some other characteristic (or that the work done on the goods or services was performed by
members of a union or other organization). For example: Hallmark, ISO mark and in U.S Underwriters
Laboratory seals of approval (Underwriters Laboratory is the largest and best known independent, not for
profit testing laboratory in the world based in Northwood, Illinois, UL conducts safety and quality tests on
a broad range of products, from firedoor’s to CCTV cameras seals of approval).

Collective Mark
A collective mark is one used by a collective membership organization, such as a labor union,
fraternity, or professional society, to identify that the person displaying the mark is a member of the
organization. Thus, the FUTURE FARMERS OF AMERICA and AMERICAN BAR ASSOCIATION
marks indicate membership in certain organizations. A company may use several marks For Example: the
word: COCA-COLA, the stylized WAVE DESIGN, and the slogan “THINGS GO BETTER WITH
COKE”. All of these marks are used on one product and all are protected by the Coca-Cola Company. On
some occasions, companies use house marks to establish recognition in a wide range of products or service.

ACQUISITION OF TRADEMARK RIGHTS

In most foreign countries, trademark rights arise from registering the mark with a governmental
entity. The law in the United States is quite different: trademark rights arise from adoption and use of a
mark. A person using a mark may have valid and enforceable rights in a mark even though the mark is not
registered with the PTO, such an owner will have priority even over a subsequent user who has secured a
federal registration for a mark with the PTO. The “use” required to establish trade mark rights is more than
token use, it must be public use, while actual sales of products or services are not required, a certain level
of presale activity is required. For example: Sales within a company or to personal friends are insufficient
to show use, while soliciting [plead for something] and accepting order is usually sufficient to show
commercial use. Thus, a person using a mark may have valid and enforceable rights in a mark even though
the mark is not registered with the PTO. Such an owner will have priority even over a subsequent user who
has secured a federal registration for a mark with the PTO.

Establishing a date of first use is critical for a trademark owner because priority of trademark rights
is measured form this date. If one party first used of mark on September 15, 2015 and another first used a
similar mark on October 15, 2015, the prior, or senior, user will be able to preclude the junior user from
using a confusingly similar mark.

For a mark to be registrable, it must be based on use in commerce, meaning the type of commerce
that can be regulated by Congress. Generally, the use is based on interstate commerce or commerce
between states (although it could be based on commerce between the United State and a foreign country).
A purely intrastate use does not provide a basis for federal registration of a mark. A purely intrastate use
does not provide a basis for federal registration of a mark. The requirement of interstate (within one state)
commerce is satisfied if the goods or services are advertised in more than one state, offered to citizens of
more than one state, or offered on the Internet, which is considered use in commerce because it is available
to a national audience through the use of telephone lines.

The general rule is that acquisition of trademark rights stem from use, there is one exception to this
rule: the intent-to-use application. Until 1989, the United States was one of only two countries in the
world that required that a mark be in actual use before an owner could file an application to register it.
After an applicant had begun using the mark and then filed an application, the PTO might refuse
registration of the mark on the basis it was confusingly similar to a prior mark or was subject to some other
defect. The applicant would then have invested substantial money and time in developing the mark, in
using it in commerce, marketing and advertising, and in applying for registration, only to be told the mark
was unregistrable. To remedy this situation, the Trademark Law Revision Act of 1988allowed persons to
file applications for marks based on a bona fide intent to use the mark in commerce in the future. If the
PTO determines the mark is unregistrable, the applicant will not have expended any sums other than the
PTO filing fee and can readily file another application for a new mark. Once the mark proceeds to
registration, priority is measured from the date the intent-to-use-application was filed, even though that
filing date may precede actual use in commerce by more than three years.

Minimal or token use cannot serve as the basis for securing or maintaining a registration, ensuring
that an owner does not reserve or “warehouse” a mark by making only sporadic use of it with the intent to
block others from using it rather than having a true commercial intent to exploit the mark for sales. The
PTO desires to clear its records of unused marks, or “deadwood”, so that such unused marks may be
available by others. The use required is “bonafide use of a mark in the ordinary course of trade, and not
made merely to reserve a right in a mark”, 15 U.S.C 1127.

COMMON LAW RIGHTS, FEDERAL REGISTRATION UNDER THE LANHAM

ACT, LAWS AND TREATIES GOVERNING TRADEMARKS, AND STATE
TRADEMARK RIGHTS

Common Law Rights

The United States, trademark rights arise from use of a mark. It is not necessary to secure
permission or registration from any governmental entity to acquire trademark rights. A party who is using
a mark without any such governmental registration is said to have a common law trademark, it can be
enforced in any geographical area in which the mark is used.

Federal Registration
Although there is no requirement that a trademark owner apply for a secure federal registration of
mark with the PTO, registration on the PTO’s Principal Register does offer several advantages:

 nationwide constructive use effective from the filing date of the application (the public assumed to
have notice that the registrant has nationwide priority in the use of its mark as of this date)
 nationwide notice to the public of an owner’s claim to a mark, thereby precluding a later user from
claiming it used a mark in good faith in a remote territory and should be able to continue use;
 the ability to bar importance of goods bearing infringing trademarks
 the right under the Paris Convention to obtain a registration in various foreign countries based upon
the U.S. registration;
 the right to bring an action in federal court for trademark infringement and recover lost profits,
damages, costs, and possibly triple damages and attorney’s fees
 incontestable status of the registration after five years of continuous use subsequent to the
registration
 the right to use the registration symbol with the mark
 a possible basis to claim priority to an Internet domain name and
 prima facie (literally, “on its face”) evidence of the validity of the registration, the registrant’s
ownership of the mark, and the registrant’s exclusive right to use the mark in connection with the
identified goods and services.
Laws and Treaties Governing Trademark

There are several laws and treaties governing trademark, including the
following:

Lanham Act The federal statute governing trademark rights is the Lanham Act (also called the United
States Trademark Act and found at 15 U.S.C § 1051 et seq.), enacted in 1946 and named for Congressman
Fritz Garland Lanham (D.Tex.), the then chair of the House Patent Committee (which also proposed
legislation relating to trademarks) who introduced the legislation. In addition to providing for federal
trademark protection, the Lanham Act also includes statutes prohibiting unfair competition. The Lanham
Act has been amended numerous times. Perhaps the most significant amendment occurred with the
Trademark Law Revision Act of 1988, which provided the following two critical changes: allowing for a
trademark application based on the applicant’s intent to use a mark in the future. Rules of practice and
procedure relating to trademarks are found at Title 37 of the Code of Federal Regulation (C.F.R).

North American Free Trade Agreement (NAFTA) came into effect on January 1, 1994, and is
adhered to by the United States, Canada, and Mexico. The NAFTA resulted in some changes to U.S.
trademark law, primarily with regard to marks that include geographical terms. The NAFTA was built on
the success of the Canada-U.S Free Trade Agreement and provided a compliment to Canada’s efforts
through the WTO agreements by making deeper commitments in some key areas. This agreement has
brought economic growth and rising standards of living for people in all three countries.

Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city situated in Spain)
Agreement concerning the International Registration of Marks of 1891, as well as the protocol relating to
the Madrid Agreement 1989. The Madrid system provides a centrally administered system of obtaining a
bundle of trademark registration in separate jurisdiction. The protocol is a filing treaties and not
substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holder. It
came into existence in 1996. It allows trademark protection for more than sixty countries, including all 25
countries of the European Union.

Trade-Related aspects of Intellectual Property Rights (TRIPs) is an international

agreement administered by the World Trade Organization (WTO) that sets down minimum standards for
many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. It was
negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in
1994.

The Doha declaration is a WTO statement that clarifies the scope of TRIPS, stating for example that TRIPS
can and should be interpreted in light of the goal "to promote access to medicines for all." Specifically,
TRIPS requires WTO members to provide copyright rights, covering content producers including
performers, producers of sound recordings and broadcasting organizations; geographical indications,
including appellations of origin; industrial designs;integrated circuit layout-designs; patents; new plant
varieties; trademarks; trade dress; and undisclosed or confidential information. TRIPS also
specifies enforcement procedures, remedies, and dispute resolution procedures.
Trademark Law Treaty Implementation Act (TLTIA) effective in late 1998 simplified several
requirements relating to trademark registration and maintenance. For example: at present, the applicant
need only submit one specimen showing how a mark is used rather than three, as was previously required.
Additionally, a trademark applicant need no longer state the manner in which the mark is used. Finally,
TLTIA established a six month grace period for filing a renewal for a trademark registration.

Federal Trademark Dilution Act The Federal Trademark Dilution Act of 1995 is a United States
federal law which protects famous trademarks from uses that dilute their distinctiveness, even in the
absence of any likelihood of confusion or competition. It went into effect on January 16, 1996. This act has
been largely supplanted by the Trademark Dilution Revision Act of 2006 (TDRA), signed into law on
October 6, 2006.

Anticybersquatting Consumer Protection Act. 15 U.S.C. § 1125(d), is an American law enacted

in 1999 that established a cause of action for registering, trafficking in, or using a domain
name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to
thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of
creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third
party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free
speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied
heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was
enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA
specifically mentions that trademark dilution in domain names was a matter of Congressional concern
motivating the Act. Senator Leahy stated that “it is my hope that this anti-dilution statute can help stem the
use of deceptive Internet addresses taken by those who are choosing marks that are associated with the
products and reputations of others”.

CATEGORIES OF MARKS
Although marks can consist of words, symbols, designs, slogans, or a combination thereof, not
every term is protectable. Even among marks that are protectable, some marks are stronger than other. In
determining strength of marks, courts recognize several categories of marks. In ascending order of strength
and protectability, the five categories are:

 A Generic Mark Generic "marks" are devices which actually name a product and are incapable of
functioning as a trademark. Unlike descriptive marks, generic devices will not become a trademark
even if they are advertised so heavily that secondary meaning can be proven in the mind of
consumers. The rationale for creating the category of generic marks is that no manufacturer or
service provider should be given exclusive right to use words that generically identify a product. A
valid trademark can become generic if the consuming public misuses the mark sufficiently for the
mark to become the generic name for the product. The prime examples of former trademarks that
became the generic name for a product are ASPIRIN, XEROX and CELLOPHANE.
 A Descriptive mark (or more properly, "merely descriptive marks") are devices which merely
describe the services or goods on which the mark is used. If a device is merely descriptive, it is not
a mark at all, since it does not serve to identify the source of the goods or services. No trademark
rights are granted to merely descriptive marks. Misdescriptive marks are equally weak. As
explained in connection with suggestive marks above, descriptive marks are often difficult to
distinguish from suggestive marks. Suggestive marks require some imagination, thought, or
perception to reach a conclusion as to the nature of the goods. Descriptive marks allow one to reach
that conclusion without such imagination, thought or perception. Putting this distinction into
practice can be very difficult. Merely descriptive marks can be registered federally on the
Supplemental Register (see the Bit Law discussion on federal registration of trademarks for more
information). The descriptive mark will not register in PTO until the consumer links the mark
with a single source. That learned association is called Secondary meaning or acquired
distinctiveness. The PTO assumes that secondary meaning has been acquired after five years of
consecutive and exclusive use of a mark. Secondary meaning can be demonstrating a significant
level of advertising, sales an consumer survey evidence, to prove that when consumer encounter a
mark.
For Example: The following imaginary marks could be considered merely descriptive for
computer peripherals:

 FAST BAUD for modems (describing the quickness of the modem);

 104 KEY for computer keyboards (describing the number of keys on a keyboard);

 LIGHT for portable computers (describing the computer's weight); and

 TUBELESS for computer monitors (even if misdescriptive for a monitor that contains
tubes).

 A Suggestive mark are marks that suggest a quality or characteristic of the goods and services.
Despite the fact that suggestive marks are not as strong as fanciful or arbitrary marks, suggestive
marks are far more common due to the inherent marketing advantage of tying a mark to the product
in a customer's mind. Suggestive marks are often difficult to distinguish from descriptive marks
(described below), since both are intended to refer to the goods and services in question. Suggestive
marks require some imagination, thought, or perception to reach a conclusion as to the nature of the
goods. Descriptive marks allow one to reach that conclusion without such imagination, thought or
perception. Putting this distinction into practice clearly is one of the most difficult and disputed
areas of trademark law.

The following marks can be considered suggestive:

 MICROSOFT (suggestive of software for microcomputers)

 NETSCAPE (suggestive of software which allows traversing the "landscape" of the
 Internet)
  SILICON GRAPHICS (suggestive of graphic oriented computers)

 Arbitrary Marks An arbitrary mark utilizes a device having a common meaning that has no
relation to the goods or services being sold.

Examples of arbitrary marks include:

 APPLE (for computers)

 LOTUS (for software)
 SUN (for computers)
 CROWN (For Television)

 Fanciful Marks are devices which have been invented for the sole purpose of functioning as a
trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the
strongest type of mark. Examples of fanciful marks are:
EXXON, KODAK and XEROX.

PROTECTABLE MATTER

Slogans, Letters and Numbers

A word or other groupings of letters is the most common type of mark For Examples: APPLE,
SILICON, GRAPHICS, NETSCAPE, IBM, NBC. Slogans from advertising campaigns are also used as
trademarks. Example slogans which have strong trademark rights attached For Example:

Nike
Alphanumeric symbols (letters and numbers) may be protectable as long as they are not merely descriptive.
If the numbers or letters describe something about the product or service offered under the mark, however,
they will not be registrable unless proof of secondary mining is shown. Thus, the mark “VT220” for
computer hardware peripherals was held merely descriptive and unregistrable because “VT” Video
Terminal and 220 was a mere model number.

Logos and Symbols

Logos are probably the next most common form of mark. A logo can be described as a design which
becomes a mark when used in close association with the goods or services being marketed. The logo mark
does not need to be elaborate; it need only distinguish goods and services sold under the mark from other
goods and services. Examples of logo marks are:
McDonald's double arches:

NBC's peacock style design:

Apple Computer's Apple:

Names of performing Artists

A mark that merely serves to identify an artist or entertainer is not registrable. However, if the owner of
the mark has controlled the quality of the goods or services, and the name of the artist or group has been
used numerous times on different records (thereby representing an assurance of quality to the public), the
name may be registered as a trademark, Thus, GOO GOO DOLLS and BOB BYLAN have been registered
for musical sound recordings.

Domain Names
Domain names, for example, www.ibm.com, are registrable as trademark or service marks only if they
function as an identification of the source of goods and service. Thus, www.oakwood.com has been
registered for real estate leasing service and www.eilberg.com was refused registration because the mark
merely indicated the location on the Internet where the applicant’s web site appeared and it did not
separately identify the applicant’s legal services. Another complication with domain name registration is
that the PTO has held that businesses that create a web site for the sole purpose of advertising their own
products or services cannot register a domain name used to identify that activity. Thus, www.amazon.com
is registered for providing online chat rooms and bulletin boards. It is not registered in connection with
offering books or other goods for sale.

Shapes and Containers

A product or container shape can also serve a source identifying function and therefore can be an
enforceable trademark. A product or container shape may also be subject to a design patent (see the BitLaw
discussion of design patents to see an analysis of the similarities and differences between design patents
and trademark protection for product shapes). Historically, trademark protection was not granted to product
shapes until the consuming public recognized the shape as indicating the source of the product. In other
words, the product shape was required to obtain secondary meaning. However, recent court decisions may
mean that an inherently distinctive product shape can be a protectable trademark even before secondary
meaning is obtained. Examples of product shapes and configurations that likely enjoy trademark status
include:
Coca-cola Bottle

Apple’s Ipod

Trade Dress
Trade dress is the overall commercial image (look and feel) of a product or service that indicates or
identifies the source of the product or service and distinguishes it from those of others. It may include the
design or configuration of a product; the labeling and packaging of goods; and/or the décor or environment
in which services are provided. Trade dress can consist of such elements as size, shape, color and texture to
the extent such elements are not functional. In many countries, trade dress is referred to as “get-up” or
“product design”. Only nonfunctional trade dress can be protected. Because trade dress is often protected
through the law of unfair competition.

Color
The color of an item can also function as a trademark. The Supreme Court held in the 1995 case of
Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300 (1995) that the green-gold color of a dry cleaning
press pad can function as a trademark. Before this decision, the argument was often made that color alone
could not be considered a trademark, since granting trademark status to colors would soon lead to the
depletion of the number of colors available for an object. The Court in Qualitex rejected arguments based
on this depletion theory, reasoning that alternative colors would usually be available for competitors. In
those cases where alternative colors were not available, courts could deny trademark protection in those
circumstances where color depletion may actually occur

Fragrances, Sounds, and Moving Images

A sound can also be a trademark or a service mark. The three tone chime of NBC has been registered as a
service mark. Sound trademarks recently were in the news when Harley-Davidson announced that it was
attempting to register the exhaust sound of a Harley- Davidson motorcycle with the U.S. Patent and
Trademark Office (USPTO). Harley-Davidson was reacting to moves by competitors to duplicate the
Harley sound in competing motorcycles. Hearings in front of the USPTO have been scheduled to determine
whether Harley-Davidson can register the sound. A fragrance can function as trademark if it is distinctive
and not functional. For example: in In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B.1990), a floral fragrance
was allowed as a trademark for sewing thread and embroidery yarn and was not functional when used in
connection with those goods. The roar of the MGM lion and Woody Woodpecker’s distinctive laugh are
also registered. Finally, the Internet has given rise to applications for marks that consist of moving images,
such as Microsoft company’s spinning EXPLORER GLOBE.

Design and Ornamentation

A design can function as a trademark as long as it is distinctive rather than merely functional or
ornamental. Some designs are protected on their own, such as Nike’s famous “swoosh” design, the
alligator that appears on shirts, and Betty Crocker’s spoon. If the design is merely back ground material,
however, and does not create a separate commercial impression, or if it consists solely of some simple
geometric shape, such as an oval or square, it cannot be protected without proof of secondary meaning.
For example, the PTO refused registration of two parallel colored bands placed at the top of socks as pure
ornamentation. Merely decorative subject matter and pure ornamentation cannot be registered because they
do not identify and distinguish goods or services and thus cannot function as trademark.

Serialized Literary and Movie Titles

The title of a single book or movie title is generally not protectable. The title of a serialized work, such as
THE BRADY BUCH or NEWSWEEK, however, can be protected as a trademark or service mark.

Insignia
Flags, coats of arms, and other insignia of the United States or any state or any foreign nation cannot be
registered.

Picture and Drawings

Pictures or drawings of a character or scene are often used as trademarks or service marks.

Corning's Pink Panther

Sun Microcomputer, Inc.'s Duke

MSN's Butterfly
Apples Automator

SELECTING AND EVALUATING A TRADEMARK

Selecting a Mark
The selection of mark occurs in a variety of ways.

 companies hold contests and encourages employees to create a mark for a new product line or
service
 Companies engage sophisticated research
 Branding firms that will conduct surveys and create a mark and a logo or design for the company.
 There are name creation software programs that help individuals and companies create marks

Once the mark is selected, it must be screed and evaluated for use and registrability, if failed then it
leads to wastage in expenditure of time and money in advertising, using, and applying for a mark that is
rejected for registration by the PTO or, in the worst case scenario, might subject the owner to damages for
trademark infringement and unfair competition.

Reviewing a Proposed Mark

Once a mark is selected, it should be carefully scrutinized to ensure that it will not be excluded from
protection under the Lanham Act.

 Firstly they have check whether the mark contains scandalous (giving offence to moral sensibilities
and injurious to reputation)
 Whether consent from a living person will be required,
 Whether the mark is generic,
 Whether it is statutorily protected
 Whether the mark is descriptive of some feature of the goods and services offered under the mark,
 It also see that the mark includes foreign terms
 Many law firms specializing in trademark work use a questionnaire form or data sheet to gather
questionnaire form or data sheet to gather basic information from clients about their marks

THE TRADEMARK SEARCH

Scope of search
 There are a variety of sources that can be reviewed to locate potentially conflicting marks
 There are literally millions of marks registered or applied for at the PTO, and thousands of journals,
trade magazines, directories, telephone books, Internet sources, state records, and state trademark
 registrations that might contain other marks or business names, a computer assisted or online search
is the most effective method of searching.
 Both LEXIS and WESTLAW, the computer-assisted legal research system, offer access to vast
databases that may point out conflicts.
 One of the best known databases is TRADEMARKSCAN product OF Thomson & Thomson.

Conducting the trademark search

The trademark searching is a two-step process:

 a preliminary search is conducted of the records of the PTO to make a quick determination as to
whether the mark may be available or whether there is conflict that would preclude use of the mark.
It is also called a knockout search.
 If the results of the preliminary or knockout search indicate a mark may be available, a
comprehensive search of other sources (including state trademark records, telephone directories,
Internet records, and trade journals) is then conducted.

Step One: The Preliminary Search

There are a variety of sources that can be used to conduct an initial trademark search, including
online subscription services, CD-ROM, the Patent and Trademark Depository Libraries, and the PTO
website search services. Following are some resources commonly used for conducting a preliminary
search:

Electronic Database and CD-ROM

 TRADEMARKSCAN is a database owned by Thomson & Thomson, a renowned trademark search

firm, which provides information on all active registered trademarks and service marks. The
TRADEAMRKSCAN database is primarily used as a quick screening tool to determine the
availability of a new mark.
 DIALOG is another database offered by Thomson & Thomson. Its database includes trademarks
from the United States plus numerous foreign countries as well as patent and copyright information.
It provides online training and practice and free practice searching at the following web site:
http://training.dialog.com/onlinecourses/trademarks/.
 SAEGIS is an entire suite of services provided by Thomson & Thomson that allows online
worldwide trademark searching as well as searching of domain name registries and websites to
locate common law uses of proposed marks.
 TRADEMARK.COM is an online search service offered by Micro Patent LLC, offering a variety of
searchable databases, including federal marks, and common law uses of potentially conflicting
marks.
 LEXIS and WESTLAW, the computer-assisted research system, offer access to vast trademark
databases that may disclose potentially conflicting marks.
 Many law firms subscribe to one or more of these services so they can perform an initial screening
search in-house.

PTO Web Site : Perhaps the easiest and least expensive way to conduct a very preliminary search is to
review the records of the PTO (http://www.uspto.gov) and it free public searching called Trademark
Electronic Search System (TESS).

Step Two: The Comprehensive Search

A separate professional trademark search firms are existing for the companies when their need of
searching the trademark. These companies review the records of the PTO (go through existing and
pending application) , review state trademark office records for state trademark registration, and they
perform a “common law” search of various journals, directories, press releases, domain names and
Internet references to locate unregistered names and mark.

These professional search firms can save considerable time and money and more importantly,
provide a more thorough search than that which an individual can conduct on his or her own, they also
check for identical and phonetically equivalent marks for similar goods and services and will also check
for foreign equivalents. They will charge for the searching of the marks. The report is typically
divided into three sections: results gained from reviewing PTO registrations and applications; results
gained from reviewing state trademark records; and the common law results.

TRADEMARK REGISTRATION PROCESSES

Preparing the application

 Once a mark has been selected and evaluated for use and registrability, an application for federal
registration of the /mark should be prepared and filed.
 An application is provided by PTO
 The name of the applicant
 The citizenship of the applicant
 The address of the applicant
 The address of the applicant
 An identification of the goods and or services offered under the mark
 A drawing of the mark
 A verification or declaration signed by the applicant or agent or attorney
 The application is based on actual use of the mark or the owner’s intent to use the mark.
 The process of moving an application through the PTO is called prosecution [(law) the institution
and conduct of legal proceedings against a defendant for criminal behavior]
 The application must be in English.
 Electronically filed application are provided by the PTO
 Self application is also be prepared as the letter size (namely 8 ½ inches by 11 inches) paper,
typewriter, double-spaced, with margins of at least 1 ½ inches at the left and top of the pages.
 The application should be written on only one side of the paper.
  The filing and prosecution of trademark application are governed by the TMEP [Trademark Manual
of Examination Procedure]
 The PTO introduced on electronic filing system in 1998.
 The Trademark Electronic Application System [TEAS]. Permits applicants to file numerous
documents electronically.
 PTO considers the electronically filed document after transmission.

The applicant
 The mark can be made only by the owner of the mark or, in the case of intent –to-use application,
by a person who has a bonafide to use the mark in commerce.
 Application may be natural persons or business entities such as corporation, partnership,
association, unions or other organization.
 Government entities such as nations, states municipalities and other governmental bodies.
 The applicant name must be in correct legal form
 A mark should be identified in the application by the name set forth in its articles of incorporation.
 Clients often make mistakes in their corporate names or in the punctuation
 The certificate of registration will issue in the name of the application as set forth in the application
 If the application is a person or business that conducts business under a fictitious [fake] business
name, the application will be rejected.
 The applicant is a partnership For example: “Balboa Gardens Partnership”, the application should
be made by the partnership itself and the state in which the partnership was organized.
 A trademark or service mark application is usually filed in the name of one party.
 The PTO has been reluctant [unwilling] to accept application by joint applicants.
 A joint venture or a partnership cannot be joint applicants
Identification of Goods or Services
The application must identify the goods and/or services offered or to be offered under the mark that
is the subject of the application. Careful consideration must be given to drafting this part of the application.
Goods and services are categorized by the PTO into forty-five separate classes, called International
Classes because many other nations use this same classification system established by WIPO. Until 1973,
the PTO used a different classification scheme, called the United States Classification Scheme. Each class
requires a filing fee of $335.

A detailed listing of the International Classes with numerous examples is found in Chapter 1400 of
TMEP, available on the PTO’s web site. If a mark is used for more than one class of goods or services, the
applicant may either file a combined application, listing all of the goods and services. Some attorneys
prefer to file separate application believing that a defect in regard to one class of goods or services in a
combined application will hold up registration for the mark in all class.
 The PTO requires that the identification of goods or services be as clear,
accurate and concise as possible. Once the application filed, no other item can be
added in the process of registration, a separate application should be applied.

REGISTRATION
 A registration will issue about twelve weeks after publication in the official gazette
 If no notice of opposition is filed to the application
 For an ITU [Intent-to-Use] application registration will occur after publication
in the official Gazette.
 The PTO will issue a certificate of registration for the mark
 The term of the registration is presently ten years from the date the mark is
registered [for registration issued before November 16, 1989, the term is
twenty years]
 “TM” for Trademark & SM for service mark.